13 June 2012 ECTA HARMONIZATION COMMITTEE Project: Investigations to assess the differences in the scope of protection a CTM enjoys in the EU Member States with regard to Article 110 (2) of CTMR (Project 24) Coordinator: Angelica Torrigiani Malaspina (angelica.torrigiani@sib.it) Compilation of Answers 1. What are the relevant provisions in your national civil, administrative and criminal law? Austria: The relevant provisions are provided for by the Trade Mark Law (civil law provisions, Sect. 51, 54, 56, 68 f and g criminal law provisions, Sect. 60 to 60c, 68h), in the Law against Unfair Competition (Sect. 9), in the Civil Code (Sect. 43), in the Copyright Law (Sect. 81) and in the Design Law (Sect. 43). Belgium: The relevant provisions are provided for by Articles 2.19 to 2.24 of the Benelux Convention on IP (BCIP), by specific provisions of national legislations on commercial practices(consumer protection, copyright), by Art. 1382 (patronymic names) of the Civil Code. As to Criminal law, the relevant provisions are those of the local law on the punishment of counterfeiting and piracy and the rules on the criminal infringement action. Netherlands: Besides the provisions of the BCIP seen above, article 162 of Book 6 of the Dutch Civil Code, Dutch Copyright Act and Article 337 of the Dutch Criminal Code apply. Bulgaria: The relevant provisions are contained in Article 26(5) of the Transitional and Final Provisions of the Law on the Amendments of the Law on Marks and Geographic Indications. Cyprus: The relevant provision is Article 14 of the National Trade marks Law (Cap.268). ECTA Secretariat, Rue des Colonies 18/24, 9th Floor, BE- Brussels, Belgium Tel. 32/2-513 52 85 Fax 32/2-513 09 14 E-Mail ecta@ecta.org Internet http://www.ecta.eu A company limited by guarantee. Reg. in England and Wales No. 1520996. Reg. address: 15 Southampton Place, London WC1A 2AJ, England. VAT No. BE0851518062
Czech Republic: The relevant provisions are contained in the Act No. 221/2006 Coll. on Enforcement of Industrial Property rights (Sec. 4), Trade mark Act (Sec. 51, Art. 1 and 2) and Commerce Code No. 513/1991 (Sec. 3, Art. 2). Denmark: The relevant provisions are contained in the Danish Trade Mark Act under Articles 15(1), 15(2), 42(1), 42(2) and in the Criminal Act under Article 299b. Estonia: The relevant provisions in the Civil laws are provided for by the Trade mark Act (Kaubamärgiseadus - Article 14 (regulating the exclusive rights belonging to a trade mark owner), Article 716 (Prohibition on Use of Community Trade mark based on Article 159a(5) of CTMR (current provision: Article 165(5) of CTMR)and Article 57 (Protection of Exclusive Right); the Law of Obligations Act (Võlaõigusseadus Article 1043 (Liability for causing the damage pursuant to law), Article 1055 (Prohibition on Performance of Damaging Acts). As to Administrative law, provisions are contained in the Competition Act (Konkurentsiseadus - Article 50 (Prohibition on Unfair Competition), Advertising Act (Reklaamiseadus Article 4 (Prohibition on Misleading Advertising). No relevant provisions are contained in Criminal law. Finland: The relevant provisions are within the Trade marks Act and the Criminal Code. France: The relevant provisions are contained in Articles 717-1 to 717-3 of the French IP Code. Germany: The relevant provisions in the Civil Laws are Sections 14, 15 of the German Trade mark Act, Sections 8, 3, 4 Unfair Competition Law (subordinated to the regulations of the German Trade mark Act), Sections 823 and the following of the German Civil Code (subordinated to the regulations of the German Trade mark Act); the criminal relevant provision are in Sections 143, 143a of the German Trade mark Act. As to the administrative provisions, these are contained in the laws Medicinal Products Act (AMG), Narcotics Act (BtMG), Bilateral treaties and Legal Provisions relating to Geographical Indications, Wines Act (WeinG), Plant Variety Act (SortenschutzG), Cheese Regulation (Käseverordnung), Regulations relating to other foodstuff such as Salt, Sugar, Coffee, Cocoa, Meat, Egg Products etc., Act relating to Associations (VereinsG) and other labelling regulations such as the Act on Textile labelling (TextilKennzG). Greece: The relevant civil provisions are Art. 26 and 27 of Law 2239/94 on Trade marks, Art. 19,20 of Law 146/14 concerning Unfair Competition; the criminal provision are Art. 31 of Law 2239/94 on Trade marks and Art. 15 of Law 146/14 concerning Unfair Competition. Hungary: No specific provisions. Italy: The relevant provisions are contained under a unitary regulation in article 124 of the Italian Code of Industrial Property. Ireland: The relevant provisions are in Article 18 of the Trade Marks Act of 1996 Latvia: While there are no specific provisions in both the administrative and criminal laws, Art. 39.4 of the Law on Trade marks and Geographical Indications applies. 2
Lithuania: No specific provisions. Malta: The relevant provisions are Article 5 of the Trade mark Act and Article 32 of the Commercial Code. Poland: The possibility of obtaining the cease of use of a CTM is set out in the Civil Code provisions dedicated to the protection of business names. Portugal: No specific provisions are contained in national laws but Article 317 of the Industrial Property Code on Unfair Competition applies. Romania: No specific provisions. Slovakia: No specific provisions are contained in national laws but the articles on unfair competition of the Commercial Code set out the possibility of obtaining the prohibition of use of a CTM. Slovenia: The relevant provisions are contained in Article 44 of the Slovenian IP Act, Article 233 of the Criminal Law and within the Unfair Competition Act. Spain: The relevant provision is Art. 34 of Spanish Trade Mark Law. Sweden: The relevant provisions are 37 to 39 of the Trade mark Act and 10.5, 18 and 23 of the Marketing Act. United Kingdom: The relevant provisions are contained in Sections 9, 10, 56 and 92 of the Trade Marks Act and in the Law of Passing Off. 2. Which proceedings, other than infringement actions stipulated by Article 110 (1) CTMR, are provided for by your national civil law including your Unfair Competition Law to obtain the cease of use of a CTM? Austria: Unfair Competition proceeding provide for the possibility of obtaining the cease of use of a CTM in case of - Dishonest business practices - Deception - Depreciation - Geographical indications Moreover, such prohibition may be obtained through the general provisions of the Civil Code on breach of contracts. Belgium: The local law on copyright provides for the cessation action, which can be instituted by the persons authorized to file an infringement action and is carried out on an expedited basis. Different from the summary proceedings, the decision on the cessation action is not only a provisional but a definitive (res judicata) decision. Netherlands: Civil infringement action as provided for by BCIP, Articles 2.19 to 2.24, unfair competition rules contained in Article 162, Book 6 of the Dutch Civil Code and the proceedings provided for by the Dutch Copyright act of 1912 and Prior Design (BCIP). 3
Bulgaria: No other specific proceedings Cyprus: Court proceedings at the Civil Court for infringement actions, passing off actions and/or bad faith actions. Czech Republic: The Act on Enforcement of Industrial Property Right provides for the possibility of obtaining a judicial order of recall, removal, or destruction of infringing goods or materials. On the basis of the Trade mark Act, the owner of a national mark dating back to prior to the accession of the Czech Republic to the EU may obtain the prohibition of the use of a CTM on the same basis of those provided for by Art. 8.1. of the CTMR and claim damages deriving from the use of the CTM on the basis of the provisions of the Act on Enforcement of Industrial Property Right. Denmark: Proceedings for preliminary injunction. Estonia: the Competition Act and Advertising Act provide for proceedings to obtain a judgement of termination of the use of a CTM in combination with the provisions set forth by the Trade Mark Act and/or Law of Obligations Act. Finland: the Civil law and the Unfair Business Practices provides for actions before the General court (District Court of Helsinki) and Market Court to obtain decisions ordering the cease of the use of a mark. France: Civil law actions on the basis of Article 1382 of the civil code. Germany: No other specific proceedings apart from actions for preliminary injunction. Greece: Art. 27 of law 2239/94 on Trade Marks and Art. 20 of Law 146/14 concerning Unfair Competition provides for Petition for injunction proceedings. Hungary: Unfair Competition Act (Sect. 6) provides for a Court proceedings to obtain a inter partes order to cease the use of a CTM for unfair commercial practice. Italy: Italian Civil Code rules the unfair competition issues and provides that the Court decisions ascertaining unfair competition acts, including the use of confusing or imitating names and distinctive signs, order the cease of such acts. After the issuance of the Italian Code of IP, however, such provision only applies to the hypothesis of unfair competition not involving IP rights. Ireland: Injunction proceedings may be filed with the High Court, pending hearing of the full trial. Latvia: the Competition Law provides the possibility to obtain a Court order of prohibition of the use of a CTM if such use is misleading as to the origin of the goods or to the identity of the market participant. Lithuania: No other specific proceedings. 4
Malta: Commercial Code (Art. 32) providing the prohibition of the use of confusing/misleading names, marks or distinctive devices, also apply to CTMs. Poland: The Civil Code sets out provisions regulating infringement actions to protect business names. Under the general rules on unfair competition, a court decision stating that the use of a CTM gives raise to tort for unfair competition may be theoretically obtained. Portugal: On the basis of Art. 317 of the Industrial Property Code, an action for unfair competition may be filed, including the case of confusing/misleading activities, which may also consist in the use of a CTM. Romania: The cease of the use of a CTM may be required through an action for unfair competition. Slovakia: The cease of the use of a CTM may be obtained on the basis of the law on unfair competition, particularly in case of use of business names/distinctive signs belonging to other competitors, use of confusing or imitating names, distinctive signs, designs, products or packagings. Slovenia: Court proceedings for trade mark infringement and unfair competition may be initiated with the Civil Court in Ljubljana and the relevant decisions may be appealed at the High Court in Ljubljana. Spain: No other specific proceedings. Sweden: the Marketing Act provides for the possibility of obtaining a decision prohibiting the use of a CTM if such use is carried out in a misleading way. United Kingdom: The cease of the use of a CTM may be obtained through an action at Common Law to restrain passing-off. 3. Are there proceedings provided for by your national administrative law through which the cease of the use of a CTM can be obtained? Austria: Yes, in case of prohibition of circulation of goods, protection of National emblems and symbols (Sect. 6 of Trade Mark Law), labelling provisions (Sect. 9 of the Trade Mark Law), presumption of awards (Sect. 31 of Law against Unfair Competition). Belgium: No. Netherlands: No. Bulgaria: No. Cyprus: No. 5
Czech Republic: No. Denmark: No. Estonia: Yes, in case of violations of the provisions of the Advertising Act, under the jurisdiction of the Consumer Protection Board. Finland: No. France: No. Germany: Yes, there are administrative proceedings and corresponding administrative regulations in the field of inter alia food law and pharmaceutical law. Greece: No. Hungary: No. Italy: Yes, the Decree of August 2, 2007 implementing Directive 2005/29/EC (businessto- consumer commercial practices) provides that the Authority may order the cease of unfair practices, which may consists also in the use of a CTM. Ireland: No. Latvia: No. Lithuania: No. Malta: No. Poland: No. Portugal: Yes. Under the general law on administrative sanctions, use of a CTM may be limited or restricted if considered contrary to the law by the competent administrative authority. Romania: No. Slovakia: No. Slovenia: No. Sweden: No. United Kingdom: No. 6
4. Are there proceedings provided for by your national criminal law through which the cease of the use of a CTM can be obtained? 4.1 In particular, can a criminal judgement ascertaining trade mark infringement contain an order to cease any use of the CTM? Austria: Yes. Criminal judgments under sections 60-60c and 60h of the Trade Mark Law may contain orders to cease the use of a CTM. Belgium: Yes/No. Criminal judgements may contain additional measures of confiscation and/or destruction, thus indirectly prohibiting the further use of the mark. Netherlands: Yes/No. Criminal judgements may contain additional measures of confiscation and/or destruction, thus indirectly prohibiting the further use of the mark. Bulgaria: No. Cyprus: No. Czech Republic: Yes. Art. 1 Sect. 150 of the Criminal Code provides for, inter alia, the forfeiture of objects concerned or other asset values. Denmark: Yes. Even if not explicitly mentioned in the Criminal Act, criminal decisions for trade mark infringement often contain the order to cease use of the offending mark.. Estonia: Yes, with a decision on the termination of unlawful damages. Finland: Yes. France: Yes, criminal proceedings are provided for by Articles 716-9 to 716-13 of the French IP Code and the criminal judgements may contain the order to cease use of a CTM. Germany: No. Greece: Yes, but indirectly: Art. 31 of Law 2239/94 on Trade marks provides that in cases of alteration the criminal court shall order as an additional penalty the destruction of the goods that bear the altered trade mark. In cases of imitation the court may order either the removal and destruction of the trade mark or the destruction of the goods. Art. 15 of law 146/14 concerning Unfair Competition provides that the criminal court when ascertaining illegal use of a sign, should order as an additional penalty the removal and destruction of the violating sign. In cases where the removal is not possible the destruction of the goods may be ordered. Hungary: No. Italy: No. 7
Ireland: Yes, the decisions on criminal judgements sentencing to a fine and/or imprisonment order to cease all further use of the CTM. Latvia: No. Lithuania: No. Malta: No. Poland: No. Portugal: Yes. The Criminal Procedure Code provides for proceedings initiated by the Public Prosecutor if use of a CTM is a criminal offence and the decision may contain an order to cease the use of the mark. Romania: No. Slovakia: No. Slovenia: Yes, they are provided for by the Criminal Law but there is no legal practice on judgements containing the order to cease the use of a CTM. Sweden: No. Spain: Yes. United Kingdom: Yes/No. Sect. 92 of the Criminal Law rules the use with criminal intent of an identical or confusingly similar mark and the judgement may contain an order of destruction. 5. Which ones of the proceedings available in your country are more commonly used and why? Austria: Civil proceedings in court. Belgium: Civil proceedings, which are easier as to the demonstration of the unlawful behaviour, more favourable to the granting of damages and more controllable by the parties. Netherlands: Civil proceedings, since criminal proceedings are prosecuted by Public Attorney s Office only in case of large scale piracy. Bulgaria: The only available proceeding is that provided for by Art. 26 of the Transitional and Final Provisions of the Law on the Amendments of the Law on Marks and Geographic Indications. Cyprus: Civil court proceedings. Czech Republic: Civil proceedings, which are easier as to the demonstration of the unlawful behaviour. 8
Denmark: Preliminary injunctions, which are costs and time effective. Estonia: Civil proceedings, which are most effective. Finland: Civil actions, since it can be difficult to file evidence of deliberate infringement in criminal cases. France: Civil proceedings, also because criminal courts are not specialized in IP and have a very formal approach. Germany: Civil proceedings (including preliminary injunction proceedings) based on unfair competition law or civil law, which provides for the possibility to obtain a cease order of the use of the CTM and to claim for damages, removal etc in an inter-partes proceeding; Greece: Petitions for injunction, which are less time consuming Hungary: Civil proceedings, which are more controllable by the parties. Italy: Civil proceedings, since injunction orders prohibiting the use of a mark are issued only by civil judges. Ireland: Civil proceedings, since criminal proceedings can be initiated only by the Director of Public Prosecution. Latvia: Civil proceedings, since injunction orders prohibiting the use of a mark are issued only by civil judges. Lithuania: Civil proceedings, since injunction orders prohibiting the use of a mark are issued only by civil judges. Malta: Respondent is unaware of any proceedings filed in this context. Poland: Civil proceedings, which provide more remedies, are more favourable as to the scope of protection of trade marks, and are more controllable by the parties. Portugal: No specific cases of proceedings under the national laws are reported. Romania: Civil proceedings, since injunction orders prohibiting the use of a mark are issued only by civil judges. Slovakia: Civil proceedings based on unfair competition. Slovenia: Civil Court proceedings. Spain: Civil proceedings, which are handled by specialized sections and are now quick and effective 9
Sweden: Civil proceedings are the only proceedings to invoke claims for trade mark infringement. United Kingdom: Civil proceedings, since criminal prosecutions require counterfeiting issues, require proof of intent and are much long lasting. 6. Are there any other relevant issues in this respect? Austria: No. Belgium: No. Netherlands: No. Bulgaria: No. Czech Republic: No. Denmark: No. Estonia: No. Finland: No. France: No. Germany: No. Greece: Greek law in theory provides for the right to bring the above mentioned proceedings for prohibiting the use of a CTM but in practice it is highly unlikely that the cease of use of a CTM can be obtained as long as the CTM remains in force. According to the prevailing opinion of Greek courts jurisprudence, when a trade mark is registered and as long as it remains in force, it cannot be challenged before civil courts. On the basis of this jurisprudence an action for infringement or a petition for injunction against a CTM would either be rejected due to lack of jurisdiction of the civil courts, or suspended until the end of the invalidation procedure before OHIM. Criminal penalties are imposed only in cases of wilful infringement of a prior right. In cases where the prior right is allegedly infringed by a later CTM, to the extent that the CTM owner is exercising his own legally protected right it would be impossible for the criminal court to establish that the CTM owner knowingly and wilfully violated the prior right. Hungary: No. Italy: No. Ireland: No. Latvia: No. 10
Lithuania: No. Malta: No. Poland: No. Portugal: No. Romania: No. Slovakia: No. Slovenia: No. Sweden: No. United Kingdom: Most criminal proceedings are bought by trading standards authorities, which are publicly founded, thus relating on inadequate resources to deal with every case. 7. Are you aware of any noteworthy decisions issued in any of the civil, administrative and criminal proceedings mentioned above? Austria: No. Belgium: No. Netherlands: No. Bulgaria: No. Czech Republic: No. Denmark: No. Estonia: The decision of the Supreme Court in Case 3-2-1-4-06 Gulf of March 30, 2006 on a case of infringement on national rights also provide some guidance for actions on infringement of a CTM. Finland: No. France: No. Germany: No. Greece: No. Hungary: No. 11
Italy: No. Ireland: No. Latvia: No. Lithuania: No. Malta: No. Poland: No. Portugal: No. Romania: No. Slovakia: No. Slovenia: No. Sweden: No. United Kingdom: No. 12